Bendigo Cemeteries Trust

[2014] ATMO 86

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 1532828(16, 25, 35, 42, 45) - Memorials@home - in the name of Bendigo Cemeteries Trust.

Delegate:

Iain Campbell Thompson

Representation:

Applicant: Ed Heerey of Counsel instructed by Maddocks, Lawyers

Decision:

2014 ATMO 86

s33(4) ex parte hearing: s41 – subsection 41(6) ground for rejection applies in relation to some services; subsection 41(5) applies to balance of goods and services except for cremation services. Application rejected for all goods and services except for cremation services.

Background

1. In this matter Bendigo Cemeteries Trust (‘the Applicant’) has made application under the Trade Marks Act 1995 (‘the Act’) to register the trade mark current details of which appear below:

Application No: 1532828

Priority Date:  21 December 2012

Goods/Services:              Class 16: Printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets

Class 25: Clothing, footwear, headgear and associated apparel

Class 35: Cemetery management and business administration, crematoria business administration, office administration, website branding 

Class 42: Website development

Class 45: Funeral and crematoria services including its associated bereavement counselling, funeral services (including pre-paid funeral services), burial, cremation, grave digging, undertaking, embalming 

(‘the Goods and Services’)

Trade Mark:  

(‘the Trade Mark’)

1. The Trade Mark was examined as is mandated by section 31 of the Act and the Examiner reported grounds for rejection of the Trade Mark under section 41 of the Act. I note that as from 15 April 2013 the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 repealed section 41 of the Act as it then stood and substituted new wording. The Registrar’s position is nevertheless that the now repealed section continues to apply to trade mark applications filed before that date.[1] Accordingly the repealed section remains relevant here and all references to section 41 hereafter in this decision are to the section as it stood prior to its amendment, as set out in paragraph 10 below That said, the Examiner’s objection was in the following terms:

   Your trade mark is, or has as its main feature, MEMORIALS@HOME.

   This indicates that the funeral related goods and services you provide allow for a consumer to have a MEMORIAL service AT their HOME.  Therefore your trade mark is descriptive of the services you provide.

   Other traders should be able to use MEMORIALS@HOME in connection with goods or services similar to yours.

   [1] See Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy (2013) ATMO 50

2. The Applicant’s legal representatives filed submissions and a statutory declaration (further discussed below) couched in terms of having the ground withdrawn by the Examiner but without success.

3. The Applicant accordingly requested to be heard – the hearing was before me as a delegate of the Registrar of Trade Marks in Melbourne on 3 September 2014.  The Applicant was represented by Mr Ed Heerey of Counsel instructed by Mr Robert Gregory of Maddocks, Lawyers.

Onus & Standard of Proof

1. In regard to where the onus lies in these proceedings I adopt the words of Murphy J in Phone Directories Co Australia Pty Ltd v Telstra Corporation Ltd [2014] FCA 373 (2014) 106 IPR 281 (‘Yellow’) at [15]:

   There is a general presumption of registrability in favour of the applicant: Sports Warehouse Inc v Fry Consulting Pty Ltd [2010] FCA 664; (2010) 186 FCR 519 (“Sports Warehouse”) at [26] to [27] and the authorities cited therein.

   The onus of proof in [proceedings] before a delegate of the Registrar and on appeal to the Court rests upon the opponent to registration: Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 185 FCR 9 (“Food Channel”) at [32] per Keane CJ, Stone and Jagot JJ.

   Accordingly, in the YELLOW Appeals as the opponents to registration, PDCA and Yellowbook must prove the grounds of opposition they rely upon. But where the enquiry proceeds to s41(6) of the Act (as I have found) or s41(5), then the onus shifts to Telstra as the applicant for the mark to persuade the Court of its entitlement to registration.

2. Absent an opponent in these ex parte proceedings, I must be satisfied that the ground as stated by the Examiner is well-taken.  If well-taken, the onus then shifts to the Applicant under subsections 41(5) or (6) to persuade me of its entitlement to registration.

3. In Yellow, Murphy J also referred to the standard of proof at [36]:

   It is unnecessary to descend into the differing views to explain my conclusion on this issue as that terrain is already well trodden. For the reasons stated in Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 237 ALR 787 (“Pfizer Products”) at [18] per Gyles J, Chocolaterie Guylian NV v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60 (“Chocolaterie Guylian”) at [26] per Sundberg J, Sports Warehouse at [39] per Kenny J, and Allergan, Inc v Di Giacomo [2011] FCA 1540 at [11] to [12] per Stone J, I respectfully prefer the view that the Act does not impose a requirement on an opponent to a trade mark to show that it is “clearly” not to be registered. The onus is to be discharged to the ordinary civil standard.[2]

   [2] See Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521.

Evidence

1. The evidence comprises a statutory declaration made on 13 June 2014 by Mr Graham Fountain, Chief Executive Officer of the Applicant.

2. Mr Fountain says of the development of the Trade Mark:

   In the 2012/13 financial year, the Mark was developed to represent and promote the Applicant's memorialisation business plan. The business plan was developed to accommodate a changing community sentiment towards allowing individuals to memorialise their loved ones in a discrete and dignified manner in their own homes rather than being restricted to memorialisation within remembrance and memorial parks.

   The Mark represents an alternative to burials on cemetery grounds and approximately 55% of the Applicant's business now comprises of cremations whose loved ones may elect to [have the deceased's memory memorialised through a range of goods and services provided under the Mark.

   Of the 55% which elect cremations over burials, approximately 7.5% elect to memorialise within a remembrance park. This means there is approximately 92% of all cremations conducted that are available for memorialisation options connected with the Mark.

   The services which the Applicant provides under the Mark include memorialisation of a deceased person, in respect of whom the Applicant has supplied funeral or crematoria services, at home through the supply of a range of memorial objects to the family including:

   stone memorials;

   clay pavers;

   granite plaques;

   rock garden memorials;

   clock photo keepsake urns;

   carved urns;

   pewter nursery blocks;

   memorial candles;

   memorial books;

   jewellery;

   teddy bears;

   garden signage;

   plant and/or water features; and

   memorial chests.

Section 41

1. At the filing date of the Trade Mark section 41 of the Act provided:

41Trade mark not distinguishing applicant’s goods or services

(1)For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1:For applicant and predecessor in title see section 6.

Note 2:If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

(2)An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note:For goods of a person and services of a person see section 6.

(3)In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

(4)Then, if the Registrar is still unable to decide the question, the following provisions apply.

(5)If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

(a)the Registrar is to consider whether, because of the combined effect of the following:

(i)the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

(ii)the use, or intended use, of the trade mark by the applicant;

(iii)any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

(b)if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons; and

(c)if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services—the trade mark is taken not to be capable of distinguishing the applicant’s goods or services from the goods or services of other persons.

Note 1:For goods of a person and services of a person see section 6.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

(6)If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

(a)if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant—the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

(b)in any other case—the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

(a)  the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

(b)  the time of production of goods or of the rendering of services.

Note 2:Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

1. In this decision I will treat the ‘at sign’ (@) as being, to all intents, interchangeable with the word ‘at’.

2. The operation of section 41 of the Act was discussed by Branson J in Blount Inc v Registrar of Trade Marks [1998] FCA 440; (1998) 40 IPR 498 (‘Blount’) where she said:

   Subsections (3) to (6) of s 41 of the Act are designed to control the process by which the Registrar is to reach a conclusion as to whether the trade mark for which registration is sought is capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (“the designated goods or services”). If the trade mark is not so capable, the application for its registration must be rejected (s 41(2)). Subsection (3) requires the Registrar first to “take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons”. Having taken such matter into account, it is theoretically open to the Registrar to conclude:

   (a) that the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons and capable, on that basis alone, of so distinguishing the designated goods or services; or

   (b) that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; or

   (c) that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, but there is uncertainty, on that basis alone, that the trade mark is actually capable of so distinguishing the designated goods or services.

   The structure of s 41 of the Act dictates that if the Registrar reaches conclusion (a) above, then he or she will decide the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons by reaching the answer that it is so capable by reason of its inherent adaptability to distinguish (s 41(2) and (3)). The Registrar will, in such circumstances, be required, by reason of the terms of s 33(1) of the Act, to accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application.

   If the Registrar reaches conclusion (b) or (c) above, he or she is, within the meaning of s 41(4) “unable to decide the question”. That is, he or she is unable, simply by taking into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services, to answer the question whether or not the trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons.

   If the Registrar reaches conclusion (b) above, then the provisions of paragraphs (a) and (b) of s 41(6) are brought into operation. If the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the applicant fails to establish that because of the extent to which the applicant has used the trade mark before the filing date of the application, the trade mark does distinguish the designated goods or services as being those of the applicant, the Registrar must reject the application pursuant to s 41(2).

   If the Registrar reaches conclusion (c) above, then the provisions of paragraphs (a), (b) and (c) of s 41(5) are brought into operation. If the Registrar, having considered the combined effect of the matters listed in subparagraphs (i), (ii) and (iii) of s 41(5)(a), is satisfied that the trade mark does or will distinguish the designated goods or services as being those of the applicant, he or she will not reject the application pursuant to s 41(2). The Registrar will, in such circumstances, accept the application unless he or she is satisfied that the application has not been made in accordance with the Act, or that there are grounds, independent of capacity to distinguish, for rejecting the application (s 33(1)). If the Registrar, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of s 41(5), is not satisfied that the trade mark does or will distinguish the designated goods as being those of the applicant, the Registrar must reject the application (s 41(2)).

3. According, the initial step in my assessment of the Trade Mark under section 41 is to take into account the extent to which it is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

4. The consideration of the inherent adaptation of a trade mark is informed by the test discussed in Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55; (1964) 111 CLR 511; [1965] ALR 344; 38 ALJR 215 at [5] where Kitto J stated:

   That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v. W. & G. Du Cros Ltd. (1913) AC 624, at pp 634, 635 Lord Parker of Waddington, having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods, defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connexion with their own goods. It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R.J. Lea, Ltd. (1913) 1 Ch 446, at p 463; (1913) 30 RPC 216, at p 227; but to say this is not to treat the question as depending upon some vague notion of public policy: it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

5. It follows that the issue which I must consider is the extent to which other traders, actuated only by proper motives, would need to use the expression ‘memorials@home’ (or some expression so nearly resembling that expression, such as ‘memorials at home’, for the sake of its ordinary signification in relation to their similar goods or services in any manner which would infringe the putative registration of the expression ‘memorials@home’).

6. The funeral industry is one in which there are a number of participants at various levels: these include at least the various religious institutions, cemeteries and crematoria, undertakers, funeral directors and civil celebrants who commonly provide memorial services on behalf of the deceased for their family and friends.  To what extent would these traders (without improper motive) require or need to use the expression that forms the Trade Mark, or (as discussed above) the plain words ‘memorials at home’, if those traders were to provide memorial services at the homes of the family or friends of the deceased?

1. It appears to me that, on the plain meaning of the expression, traders in the funeral industry who provide memorials at the homes of the deceased, their family or friends would desire or need without improper motive to use that expression or one closely resembling it for the sake of its ordinary meaning.  This is particularly so with the trend, referred to in the evidence, away from religious memorial services to secular ones.  The expression thus lacks prima facie inherent adaptation to distinguish in relation to goods and services connected with providing memorials at the homes of people.

2. Thus, for the services ‘Funeral and associated bereavement counselling, funeral services (including pre-paid funeral services), undertaking,’ (being part of the Class 45 specification), I consider that the expression lacks any inherent adaptation to distinguish the services of the Applicant from the services of other traders who provide similar services.

3. In relation to ‘printed matter and materials, photographs, stationery, office materials, vehicle decals and livery, brochures and pamphlets’ (being the entire Class 16 specification), “clothing, footwear, headgear and associated apparel” (the entire Class 25 specification), “cemetery management and business administration, burial, grave digging, crematoria business administration, office administration, website branding” (the entire Class 35 specification), ‘website development’ (the entire Class 42 specification) and the “burial, grave digging, embalming” services included as part of the Class 45 specification, I consider that the Trade Mark is to some extent inherently adapted to distinguish those goods and services from the goods or services of other persons but I am unable to decide, on that basis alone, that the trade mark is “capable of so distinguishing those designated goods or services” (‘the subsection 41(5) goods and services’).  The Applicant is a trust that is responsible for the oversight and running of five cemeteries and Mr Heerey submitted that the Goods and Services are goods in trade inasmuch as the Applicant may provide them to the cemeteries (and their managements) for which it is responsible.  It follows that there are, or are likely to be, other trusts or businesses that are similarly responsible for the oversight, direction or guidance of groups of cemeteries and may similarly provide the similar goods and services to the cemeteries and crematoria they supervise or administer.  Additionally, undertakers, funeral directors and civil celebrant services may be franchised and such franchisors are likely to provide similar goods and services to their franchisees.

4. Thus, in my consideration, the Trade Mark lacks inherent adaptation to distinguish to some degree or other in relation to most of the goods and services with the exception of crematoria services which cannot be conducted in people’s homes.

5. In relation to ‘Funeral and associated bereavement counselling, funeral services (including pre-paid funeral services), undertaking,’ to which the ground exists in terms of subsection 41(6) of the Act, the Applicant has not provided any evidence of use before the filing date of the Trade Mark. I thus take the Trade Mark not to be capable of distinguishing those services from the similar services of other persons and I reject the Trade Mark in respect of those services.

6. In relation to the subsection 41(5) services, the Applicant has not provided evidence of use of the Trade Mark before the filing date.  The Applicant has, since the filing date, used the Trade Mark in brochures and pamphlets provided to bereaved individuals.  I note also that the Applicant uses the collocation ‘memorials@home’ twice in its 2012-2013 Annual Report (‘the Report’).  The Report states on page 8:

   The business provides the following services to the community:

   • A range of cemetery, crematoria, reception and memorialisation services to the community (the latter shifting to online environment and the provision of ‘memorials@home’ in line with changes in community attitude).

7. And on page 39 the Report states:

   Memorialisation conversion and sales continues as a key business development focus for the organisation and the newly appointed Business Development Assistant. This includes developing a suite of 'memorials@home' products and services as well as the traditional suite of memorialisation products. The intention is to transition these products into the e-commerce operating environment as part of the new website and online operating environment.

8. Section 17 of the Act defines the expression ‘trade mark’:

   17What is a trade mark?

   A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

   Note:For sign see section 6.

9. I do not consider the expression ‘memorials@home’ in the passage at [22], above, shows proposed use to distinguish the goods or services of the Applicant from other traders but rather to refer to an activity that might be provided by any trader.

10. When the expression ‘memorials@home’ is considered in the context in which it appears at [23], it is not clear that the proposed use is trade mark use.  While the Applicant has provided pamphlets and brochures which include the Trade Marks, it has not indicated a clear strategy or plan concerning the future use of the Trade Mark.  The Report deals with the development of a brand strategy by the Applicant however there is no mention of the Trade Mark within that section of the Report.

11. Thus, to paraphrase Branson J in Blount, having considered the combined effect of the matter listed in subparagraphs (i), (ii) and (iii) of subsection 41(5), I am not satisfied that the Trade Mark does or will distinguish the designated Goods and Services as being those of the Applicant.  The material before me is insufficient to be able to assess whether the Trade Mark will ever distinguish the Applicant’s subsection 41(5) goods and services from those of other traders.  Moreover, the evidentiary material before me instead suggests that the Trade Mark is (and will remain) descriptive of a present product/service category rather than being perceived in due course by the public as having been adopted by the Applicant as a trade mark to distinguish its Goods and Services from those of other traders.

12. Accordingly, I must reject the application.

13. There remains cremation services for which there is no ground for rejection.  If the Applicant applies within two weeks from the date of this decision to amend its specification to ‘cremation services’ the Trade Mark may be accepted for possible registration in relation to those services.  If not, application is rejected in its entirety.

Iain Campbell Thompson

Hearing Officer

Trade Marks Hearings

16 September 2014